Appeal 2006-2705
Application 09/947,824
Cir. 1983). The PTO may not disregard claim limitations comprised of
printed matter. See Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also
Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 10 (1981). However,
the Examiner need not give patentable weight to descriptive material absent
a new and unobvious functional relationship between the descriptive
material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32
USPQ2d 1031, 1035 (Fed Cir. 1994); In re Ngai, 367 F.3d 1336, 1338, 70
USPQ 1862, 1864 (Fed. Cir. 2004). We conclude that when the prior art
describes all the claimed structural and functional relationships between the
descriptive material and the substrate, but the prior art describes a different
descriptive material than the claim, then the descriptive material is non-
functional and will not be given any patentable weight. That is, we conclude
that such a scenario presents no new and unobvious functional relationship
between the descriptive material and the substrate. In the instant case on
appeal, we find that the invention of claims 1 through 21 recites non-
functional descriptive material which does not provide a patentable
distinction to the data structure as a structure. In other words, we find that
the meaning attributed to the information stored in the data structure cannot
be used to distinguish the claimed data structure from a prior art data
structure. Therefore, we conclude that the invention of claims 1 through 21
is not patentably distinguishable from the data structure of the applied prior
art.
In view of the foregoing, the decision of the Examiner rejecting
claims 1 through 21 under 35 U.S.C. § 103 is affirmed.
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